Yesterday, Google announced its Patent Purchase Promotion.  Basically, it is an opportunity for U.S. patent owners to submit an offer to Google for Google to purchase their patents.  Google's blog post announcing the sale implies that it is doing this to provide an alternative for inventors over selling to patent trolls (see John Oliver's take on trolls below).

Owners would be able to submit an offer to Google between May 8 and May 22, 2015.  Google has calendared out the entire process.  Google will consider all the patents between May 23 and June 25, 2015.  Google will then request additional information from patent owners that have patents Google is interested in purchasing.

Here are some key features of the program:

  • Patent owner picks the price.
  • Once the offer is submitted to Google, it can't be cancelled.
  • The patent owner keeps a license to keep exercising the patent, but not to enforce it against anyone else.
  • Existing licenses already granted by patent owner stay intact (although a patent is not eligible if it has already been exclusively licensed).
  • All details about the purchase remain confidential.

The purchase agreement proposed by Google is very straightforward.  If Google accepts, the patent owner assigns the patent (including all related documents) and Google pays cash within 30 days of signing.

In order to participate, you need to be prepared for the following:

  • Google's purchase agreement.
  • Give Google a firm price for your patent.
  • giving the original ribbon copy issued by the United States Patent and Trademark Office (if you have it)
  • giving all materials you have related to building the invention.
  • giving copies of documents related to obtaining the patent
  • providing Google information on all of your enforcement activities
  • providing any demand letters, licensing offers or information about enforcement actions
  • providing all materials related to any disputes or investigations relating to the patent
  • providing copies of all existing licenses agreements
  • copies of any and all merger or change of name documents
  • copies of any and all bank security agreements and releases relating to the patent

Looking at the Google purchase agreement, there really isn't much risk to the selling patent owner.  The agreement lets the patent seller keep doing what it wants under the patent, and it doesn't require the patent seller to indemnify Google. On the downside, it doesn't give the patent seller any of the upside if Google goes out and starts suing people (i.e., if Google becomes a troll after buying all these spiked clubs).

I think its worth a try!  Especially if you have a patent that you haven't figured out how to monetize or if you're already thinking of selling to a patent troll.  With any luck we won't hear about a new service next year called Google Troll being offered by the company.  Then again, you'd already have your license to do what you want so maybe that wouldn't matter anyway.

~ TechAttaché

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